How to Improve Patent Claim Interpretations Introduction

How to Improve Patent Claim
Interpretations
Edward D. Manzo*
Introduction
In 2011, fifteen years after the Supreme Court ruled that judges rather than
1
juries are to interpret the meaning of patent claims, the Court of Appeals for
the Federal Circuit decided about seventy-five appeals that involved some aspect
2
of patent claim interpretation (also called construction). The Federal Circuit
3
finds errors in claim interpretations with notable frequency every year. This is
not surprising: in 2006, Judge Rader explained that a trial court had followed
a logical path in its claim construction yet had erred because its reasoning
“place[d] too much emphasis on the ordinary meaning of [a term] without
adequate grounding of that term within the context of the specification.”4
In a 2011 denial of a petition for Federal Circuit rehearing en banc, Judge
Moore in a dissenting opinion joined by (now) Chief Judge Rader declared,
“[d]espite the crucial role that claim construction plays in patent litigation,
our rules are still ill-defined and inconsistently applied, even by us.”5
This article suggests four ways that patent claim interpretations can be
improved. These are: (1) using well-qualified masters, (2) using legal expert
testimony when appropriate, (3) focusing on the different roles of the claims
* The author practices IP litigation, client counseling, and IP portfolio development as
a partner in the Chicago office of Husch Blackwell LLP. The views expressed herein are not
to be understood as the views of the firm or of any of its clients but instead are views of
the author as to existing law and how it may be improved. The author is the editor-in-chief
of Patent Claim Construction in the Federal Circuit (West, 2006 et seq.) and Patent Claim Interpretation-Global Edition (West, 2008 et seq.) He is the lead author
of Patent Reform 2011: The Leahy-Smith America Invents Act: Commentary and
Analysis (West 2011). He holds degrees in physics and law and is admitted to practice in
Illinois, New York, and the USPTO.
1
See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
2
For an annual review of Federal Circuit opinions on this topic, see Edward Manzo et
al., Patent Claim Construction in the Federal Circuit (West 2012).
3
See David L. Schwartz, Practice Makes Perfect? An Empirical Study of Claim Construction
Reversal Rates in Patent Cases, 107 Mich. L. Rev. 223, 246 & tbl. 2 (2008).
4
Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1378 (Fed. Cir. 2006).
5
Retractable Techs., Inc. v. Becton, Dickinson and Co., 659 F.3d 1369, 1370 (Fed. Cir.
2011).
204 The Federal Circuit Bar Journal Vol. 22, No. 1
and the written description, and (4) deciding claim construction independently
of the subsequent issues of infringement and validity.
I. The Background Problem
Differences between patent claim language and the written description of
the patented invention lead adverse parties to disagree on the claim scope. Each
patent must include a written specification compliant with 35 U.S.C. § 112
(Patent Act of 1952), the first paragraph of which requires the specification to
include a written description of the invention that enables others to make and
use the invention and discloses the best mode for carrying out the invention.
6
The second paragraph of section 112 requires the specification to conclude
with “one or more claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.”
The requirement for claims developed after the enactment of the first patent
statutes. The Patent Acts of 1790 and 1793 did not call for the inventor
to include “claims” per se, but they did require the written description to
contain “full, clear and exact terms, as to distinguish the same from all other
8
things before known.” A form of claiming in the written description itself
9
developed fairly early, as noted by the Supreme Court in 1822. Fourteen
years later, Congress formalized the practice of claiming in the Patent Act of
1836. Section 6 called for the inventor to “particularly specify and point out
the part, improvement, or combination, which he claims as his own invention
7
10
6
Patent Act of 1952, 35 U.S.C. § 112 (2006). The first paragraph of section 112 provides:
The specification shall contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode contemplated
by the inventor of carrying out his invention.
Id. (emphasis added).
7
Id.
8
Act of Feb. 21, 1793, ch. 11, § 3, 1 Stat. 318, 321 (emphasis added).
9
Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 428, 435 (1822). In Evans, the Court noted
that in the specification of the patent-in-suit, the inventor,
after describing his Hopperboy, its structure, and use, sums up his invention as follows:
“I claim as my invention, the peculiar properties or principles which this machine
possesses, in the spreading, turning, and gathering the meal at one operation, and the
rising and lowering of its arms by its motion, to accommodate itself to any quantity
of meal it has to operate upon.”
Id. at 428. The Court ruled that a patent issued under the 1793 Patent Act required the
inventor “to describe what his own improvement is, and to limit his patent to such improvement.” Id. at 435.
10
Patent Act of 1836, ch. 357, § 6, 5 Stat. 117, 119 (1836).
How to Improve Patent Claim Interpretations205
or discovery.” Congress perpetuated this requirement in section 26 of the
12
Patent Act of 1870 and paragraph 2 of section 112 of the Patent Act of 1952.
Thus, one of these two patent parts explains and the other one defines.
Adverse parties often hold significantly different views on how to harmonize
statements about the invention, its objects, or examples of the invention in
the written description with the claim language. This leads to the disputes
over claim meaning that courts must answer via claim interpretation, even
15
when the terms are simple.
11
13
14
II. Use Patent Lawyers with Litigation Experience as Masters
District judges and others have recognized the benefits of specialized advisors
16
to the court or specialized courts. There is no specialized, first-level patent
claim interpretation court, but district courts can appoint seasoned patent
lawyers as masters under Rule 53 of the Federal Rules of Civil Procedure to
handle patent claim interpretation. The Federal Circuit has sustained this
18
option. Indeed, in 2011, the Federal Circuit applauded the assistance that
a master for patent claim interpretation can provide: “[a] primary purpose
of appointing a special master is to narrow the issues before the district court
judge to facilitate an efficient and timely resolution of complex or highly17
11
Id.
See Joshua D. Sarnoff, The Historic and Modern Doctrines of Equivalents and Claiming
the Future, Part I (1790–1870), 87 J. Pat. & Trademark Off. Soc’y 371, 384, 399 & n.
141, 408 (2005).
13
See 35 U.S.C. § 112 (2006) (paragraphs 1 & 2).
14
See, e.g., O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362
(Fed. Cir. 2008), aff’d, 449 Fed. App’x 923 (Fed. Cir. 2011), reh’g and reh’g en banc denied,
2012 U.S. App. LEXIS 4881 (Fed. Cir. Jan. 26, 2012).
15
See id. A district court is obligated to construe language that is simple yet contested.
Id. (“When the parties present a fundamental dispute regarding the scope of a claim term,
it is the court’s duty to resolve it.”).
16
See Judge James F. Holderman & Halley Guren, The Patent Litigation Predicament in the
United States, 2007 U. Ill. J.L. Tech. & Pol’y 1, 16–18 (2007); Judge James F. Holderman,
Judicial Patent Specialization: A View from the Trial Bench, 2002 U. Ill. J.L. Tech. & Pol’y
425, 431 (2002). But cf. Gwendolyn G. Ball & Jay P. Kesan, The Impact of General
and Patent-Specific Judicial Experience on the Efficiency and Accuracy of Patent
Adjudication 59–60 (2010), available at http://www.law.northwestern.edu/searlecenter/
papers/Ball_Kesan_Judge-Court-Specialization.pdf; John B. Pegram, Should There Be a U.S.
Trial Court with a Specialization in Patent Litigation?, 82 J. Pat. & Trademark Off. Soc’y
765 (2000) (summarizing the debate over the need for specialization in patent litigation).
17
See Fed. R. Civ. P. 53.
18
See, e.g., Sitrick v. Dreamworks, LLC, 516 F.3d 993, 996 (Fed. Cir. 2008).
12
206 The Federal Circuit Bar Journal Vol. 22, No. 1
19
technical issues, such as patent claim construction.” This way, a litigationexperienced patent lawyer who is able to comprehend the disputed subject
matter and apply the law to it can prepare a report and recommendation on
20
claim interpretation for district court review.
Legal training is necessary for claim interpretation. Without it, a technical
expert will confront problems if asked to serve as a master for claim
interpretation. Judge Pauline Newman of the Federal Circuit describes patent
claim interpretation as “a fact-dependent, invention-oriented exercise in
21
logic and law.” Technical experts without legal training generally are not
competent to perform the legal analysis. Prevailing case law tells us that the
understanding of the person ordinarily skilled in the art (“POSITA”) is only
23
“an objective baseline from which to begin claim interpretation.” The further
aspects of claim interpretation apply the law to the evidence. It is said that
25
patents are not written for laymen, but for persons skilled in the art. The
people best able to understand what a patent document means should be
patent writers themselves, who have technical training and, for the most
part, also have law degrees. Because a patent needs to explain an invention
to a POSITA, technical expert testimony as to the teachings can be received
during claim construction for consideration in the entire calculus.
22
24
26
19
Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1131 (Fed. Cir. 2011)
(citing Fed. R. Civ. P. 53 advisory committee’s note for 2003 amendments). The Advisory
Committee noted in its 2003 Amendments that “[t]he court’s responsibility to interpret
patent claims . . . may be greatly assisted by appointing a master who has expert knowledge
of the field in which the patent operates” because “the advantages of initial determination
by a master may make the process more effective and timely than disposition by the judge
acting alone.” Id. (internal quotations omitted).
20
See id. The master should be familiar with both patent litigation and USPTO practice.
For example, during patent prosecution in the USPTO, claims receive the broadest reasonable interpretation for prosecution purposes. See Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc). This is not the interpretation courts assign to claims for
infringement or validity purposes in litigation. See id. at 1313, 1327.
21
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir. 2006)
(Newman, J., dissenting).
22
See id. (legal training better prepares an evaluator for the required “fact-dependent . . . exercise of logic and law” in patent claim construction).
23
Phillips, 415 F.3d at 1313 (emphasis added).
24
See SmithKline Beecham Corp., 439 F.3d at 1322 (Newman, J., dissenting).
25
Phillips, 415 F.3d at 1313 (“[P]atents are addressed to and intended to be read by
others of skill in the pertinent art.”).
26
Id. at 1318.
How to Improve Patent Claim Interpretations207
III. Legal Expert Witness Testimony is Proper on Selected
Issues
Courts have contended with finding the proper role of extrinsic evidence in
the past decade. For example, one form of extrinsic evidence—dictionaries—
caused a schism in judicial thinking, which was finally addressed en banc in
Phillips v. AWH Corp. Phillips clarified that the patent specification is the
single best guide to the meaning of the claims. Nonetheless, judges can use
dictionaries so long as the resulting claim interpretation is ultimately grounded
30
in the specification.
Other extrinsic evidence—expert testimony—can be very helpful in claim
interpretation. Like many other circuits, the Federal Circuit approves the use
31
of technical experts to inform the trial court on the technology in the case.
27
28
29
27
Id. at 1317–19.
Id. at 1332.
29
Id. at 1313. Courts start with the assumption that the plain and ordinary meaning
of the claim language applies. Id. That meaning is the meaning that the intrinsic evidence
would have to a person ordinarily skilled in the art. Id. In Phillips, the en banc court noted:
[T]he ordinary and customary meaning of a claim term is the meaning that the term
would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. The inquiry into how
a person of ordinary skill in the art understands a claim term provides an objective
baseline from which to begin claim interpretation. That starting point is based on the
well-settled understanding that inventors are typically persons skilled in the field of
the invention and that patents are addressed to and intended to be read by others of
skill in the pertinent art.
Id. (citations omitted).
30
Id. at 1322–24. However, a dictionary cannot be used to contradict claim meaning
that is unambiguous in light of the intrinsic evidence. Id. The claim construction must be
grounded in the intrinsic evidence and not based on dictionary definitions in the abstract.
See Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1329 (Fed. Cir. 2008) (claim construction outcome consistent with dictionary definition offered by Oracle). But cf. Chamberlain
Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1337 (Fed. Cir. 2008) (dictionary use reversed
where specification was clear); Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
1379, 1382 (Fed. Cir. 2008) (intrinsic evidence was silent, dictionary used); Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1371 (Fed. Cir. 2008) (rejected dictionary meaning
of “while”); Symantec v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1291 (Fed. Cir. 2008)
(dictionary used).
31
Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) (can rely on
expert testimony on a claim construction question where intrinsic evidence does not supply
the answer); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585 (Fed. Cir. 1996)
(endorsed use of expert testimony and other extrinsic evidence solely to help understand
underlying technology).
28
208 The Federal Circuit Bar Journal Vol. 22, No. 1
One canon of patent claim interpretation instructs that extrinsic evidence
can be received by the court but extrinsic evidence cannot be used if intrinsic
32
evidence alone is sufficient. This may bear further discussion, as the judicial
determination of what various descriptions mean to a POSITA could benefit
from the actual testimony of such a person or from a technical expert.
Otherwise, judges have to decide in a vacuum what technical disclosures mean
to a POSITA. One may question whether that is the best way to make such
judgments. Further, expert testimony that contradicts the intrinsic evidence
34
has been denied any weight. Again, this may need to be reevaluated, as a
35
judge’s view of what the intrinsic evidence means may be totally wrong.
The role of patent law experts in patent claim interpretation is usually
cabined to describing USPTO procedures. The testimony is not on the law
but instead on the nuances of patent claim drafting and prosecution before
the USPTO. For example, sometimes it is relevant to understand what the
patent examiner was thinking when issuing an “office action” or allowing
the application. Though their testimony would be helpful, patent examiners
are not allowed to testify on their mental processes or various other issues.
A technical expert generally would not have a proper foundation to opine
on what the patent examiner apparently thought. That leaves only a patent
33
36
37
38
32
Key Pharms., 161 F.3d at 716. Expert witness testimony on claim meaning may not
be used if intrinsic evidence is sufficient because an expert cannot contradict the intrinsic
evidence. See id.
33
See Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1357 (Fed.
Cir. 2006).
34
See Vitronics, 90 F.3d at 1583. One may query how this precept applies in situations
where the patent contradicts itself. Testimony one way or the other would necessarily contradict some portion of the patent, yet it seems to be material and probative evidence that
a court should be permitted to rely upon to resolve contradictions.
35
The Federal Circuit has noted that ‘‘[t]he descriptions in patents are not addressed to
the public generally, to lawyers or to judges, but, as section 112 says, to those skilled in the
art to which the invention pertains or with which it is most nearly connected.’’ Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (quoting In re Nelson, 280 F.2d 172,
181 (C.C.P.A. 1960)).
36
See, e.g., Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir.
2008).
37
See generally, Manual of Patent Examining Procedure § 1701 (U.S. Patent &
Trademark Office 2010) (codified at 37 C.F.R. § 1.75); see also W. Elec. Co. v. Piezo Tech.,
Inc., 860 F.2d 428, 431 (Fed. Cir. 1988).
38
See Fed. R. Evid. 602 (“A witness may testify to a matter only if evidence is introduced
sufficient to support a finding that the witness has personal knowledge of the matter.”).
How to Improve Patent Claim Interpretations209
expert to form an opinion on what the examiner probably had in mind. A
similar analysis applies to explaining amendments during prosecution.
Therefore, while patent experts may be disfavored by courts for claim
interpretation purposes, they should not be rejected wholesale. Their testimony
can be helpful in illuminating the patent process. First, testifying experts must
possess specialized knowledge.40 Second, their testimony is given under oath.
Third, they are open to cross-examination and questioning by the court. In at
least these ways, expert testimony offers improvement over attorney argument.
39
IV. Don’t Blur the Different Roles of Claims and the Written
Description
Post-1836, patent lawyers in the U.S. have been trained that a patent’s
written description does not replace the claims in defining the scope of the
41
invention. They are deeply mindful that these two sections of a patent perform
different functions, even though both concern the invention. According
to the 1952 patent statute and the Supreme Court, the claims rather than
the specification point out the metes and bounds of the subject matter to
be protected as the invention. Members of the patent bar do not regard the
mission of the “written description” as drawing lines between prior art and
45
the claimed subject matter. That is what claims do.
42
43
44
39
See Sundance, Inc., 550 F.3d at 1364 & n. 7, 1365 (“Allowing a patent law expert
without any technical expertise to testify on the issues of infringement and validity amounts
to nothing more than advocacy from the witness stand.”). A similar analysis applies to explaining amendments during prosecution. See id.
40
See Fed. R. Evid. 702.
41
See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
42
See id. (claims, and not the written description part of the specification, define the
right to exclude).
43
See, e.g., Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1961)
(“[T]he claims made in the patent are the sole measure of the grant.”); Markman v. Westview
Instruments, Inc., 517 U.S. 370, 373 (the claim defines scope of patent grant).
44
See Phillips, 415 F.3d at 1312.
45
See, e.g., United States v. Adams, 383 U.S. 39, 49 (1966) (“[I]t is fundamental that
claims are to be construed in the light of the specifications and both are to be read with a
view to ascertaining the invention.”); Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285
F.3d 1046, 1052 (Fed. Cir. 2002) (en banc) (“Consistent with its scope definition and notice
functions, the claim requirement presupposes that a patent applicant defines his invention
in the claims, not in the specification. After all, the claims, not the specification, provide the
measure of the patentee’s right to exclude.”); SRI Int’l v. Matsushita Elec. Corp. of Am., 775
F.2d 1107, 1121 n.14 (Fed. Cir. 1985) (en banc) (“Specifications teach. Claims claim.”).
210 The Federal Circuit Bar Journal Vol. 22, No. 1
During examination, the USPTO does not reject the patent specification for
failing to distinguish over prior art. Instead, it examines claims to see whether
they distinguish over prior art. Why then should one look in the specification
to define the invention? That has not been the job of the written description
since the patent statute was amended in 1836 to remove the “distinguishing”
requirement from the written description and call for claiming.
A practical reason for reading the specification is that almost no one
understands an invention simply from reading a patent claim. Claims are
esoteric and written by trained patent professionals to convey technical
information to other patent professionals or patent examiners for a specific
legal purpose. Patent claims are not written (or required) to explain an
invention but rather to define its inventive aspects succinctly. Because patent
claims are required by the USPTO to be in the form of a single sentence,
51
their syntax is sometimes strained.
The job of the claims is to define precisely what the inventor claims as
the invention. An informed claim interpretation calls for reading the entire
patent document, including the description of how to make and use the
invention. In light of this background information, patent claims fulfill their
intended function of particularly pointing out the subject matter intended to
53
be protected as the patented invention. After reading the specification, the
46
47
48
49
50
52
46
See Johnson & Johnston Assocs., 285 F.3d at 1052 (explaining “the claim requirement presupposes that a patent applicant defines his invention in the claims, not in the specification”).
47
See id.
48
See Craig A. Nard, Legal Forms and the Common Law of Patents, 90 B.U. L. Rev. 51,
66–67 (2010).
49
See Phillips, 415 F.3d at 1313 (“[P]atents are addressed to and intended to be read by
others of skill in the pertinent art.”).
50
See Manual of Patent Examining Procedure § 608.01(i) (U.S. Patent & Trademark
Office 2010) (codified at 37 C.F.R. § 1.75).
51
See id. § 608.01(m) (“While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence [and] . . . [p]eriods
may not be used elsewhere in the claims except for abbreviations.”).
52
See id. § 608.01(i)(a).
53
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 277 (1949), superseded
by statute on other grounds, 35 U.S.C. § 112 (1952). The Supreme Court stated:
The statute makes provision for specification separately from the claims and requires that
the latter “shall particularly point out and distinctly claim the part, improvement, or
combination which he claims as his invention or discovery.” It would accomplish little
to require that claims be separately written if they are not to be separately read. . . . We
have frequently held that it is the claim which measures the grant to the patentee. While
the cases more often have dealt with efforts to resort to specifications to expand claims,
it is clear that the latter fail equally to perform their function as a measure of the grant
when they overclaim the invention. When they do so to the point of invalidity and
How to Improve Patent Claim Interpretations211
claim interpreter must then return to the actual claim language to see which
aspects of the subject matter described in the written description are actually
being “claimed.” This can lead to an uncertainty that is not often discussed.
In particular, it can be difficult to determine whether the broad language of
the claims is an effort to define the invention more broadly than the written
description states or, on the other hand, is an imperfect effort to define what
was described. That is, the question is whether the claims reflect the inventor’s
actual invention or something broader crafted by a lawyer.
Per Markman v. Westview Instruments, Inc., judges rather than juries resolve
questions of patent claim meaning. The proper role of the district court in
claim construction is not to redefine claim features but to give meaning to
what is actually contained in them. As the Federal Circuit explained in 2011:
54
55
56
57
It is well settled that the role of a district court in construing claims is not to redefine
claim recitations or to read limitations into the claims to obviate factual questions
of infringement and validity but rather to give meaning to the limitations actually
contained in the claims, informed by the written description,
the prosecution history
58
if in evidence, and any relevant extrinsic evidence.
Therefore, when interpreting patent claims, one must be vigilant not to blur
the distinction between the operative parts of the patent document because
each serves a function different from the other. Importing subject matter from
the specification into the claims to sustain validity has been rebuffed by the
Supreme Court:
It is suggested, however, that this feature may be read into the claims for the purpose of
sustaining the patent. While this may be done with a view of showing the connection
in which a device is used, and proving that it is an operative device, we know of no
principle of law which would authorize us to read into a claim an element which is
not present, for the purpose of making out a case of novelty or infringement. The
difficulty is that if we once begin to include elements not mentioned in the claim in
order to limit such claim and avoid a defence of anticipation, we should never know
where to stop. If, for example, a prior device were produced exhibiting the combination
of these claims plus the springs, the patentee might insist upon reading some other
are free from ambiguity which might justify resort to the specifications, we agree with
the District Court that they are not to be saved because the latter are less inclusive.
Id. (citations omitted).
54
Manual of Patent Examining Procedure § 608.01(k).
55
517 U.S. 370 (1996).
56
Id. at 372, 388.
57
Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011)
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)).
58
Id.; see also Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565,
1580 (“[T]he construction of claims is simply a way of elaborating the normally terse claim
language: in order to understand and explain, but not to change, the scope of the claims.”),
overruled in part by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1281 (Fed. Cir. 2009).
212 The Federal Circuit Bar Journal Vol. 22, No. 1
element into the claims, such for instance as the side frames and all the other operative
portions of the mechanism constituting the car truck, to prove that the prior device
was not an anticipation. It might also require us to read into the fourth claim the
flanges and pillars described in the third. This doctrine is too obviously untenable to
require argument.59
Reading subject matter into claims to sustain validity over a best mode, written
description, or lack of enablement defense should be treated with the same
derision, as all of these defenses speak to the validity of the patent claims.
Aside from questions of prosecution disclaimer, supplementing the claim
interpretation with features from the written description deprives the inventor
of the scope of the claims that he actually defended before the USPTO as
patentable over the prior art.
There are times when claim scope should be limited based on statements in
the specification or file history. First, if the claim links to the specification via
some language, then looking there may be justifiable (or necessary). Second,
it seems fair and equitable to hold an inventor to what he admitted clearly in
a specification as not the invention. This prevents the inventor from making
concessions in the specification and ignoring them in the claims. One way to
consider such statements, which are in the nature of forfeitures, is to use the rule
63
that equity abhors forfeitures, and such statements are not to be recognized
64
as disclaimers or disavowals unless they are clear and unambiguous. Another
way of evaluating such statements is to consider them part of the inventor’s
written description of his invention. Third, a limitation from the specification
is proper when an inventor or patent drafter includes lexicography in the
65
written description. The lexicography can be explicit or implicit.
60
61
62
59
McCarty v. Lehigh Valley R.R., 160 U.S. 110, 116 (1895).
See generally Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc).
61
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
62
See id.
63
Jones v. Guar. & Indem. Co., 101 U.S. 622, 628 (1879) (citing Marshall v. Vicksburg,
82 U.S. (15 Wall.) 146, 149 (1872)) (“A court of equity abhors forfeitures, and will not lend
its aid to enforce them.”).
64
The test for a specification disavowal is whether the language is clear enough to show
reasonable clarity and deliberateness, and so unmistakable as to be unambiguous evidence.
See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012); see also Laryngeal Mask
Co. v. AMBU A/S, Ambu Inc., 618 F.3d 1367, 1373 (Fed. Cir. 2010) (clear & unambiguous);
Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1338 (Fed. Cir. 2010) (same). Prosecution
disclaimer does not apply to an ambiguous disavowal, and prosecution disclaimer does not
apply if an applicant simply describes features of the prior art and fails to distinguish the
claimed invention based on those features. Computer Docking Station Corp. v. Dell, Inc.,
519 F.3d 1366, 1375 (Fed. Cir. 2008).
65
See, e.g., Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1330
(Fed. Cir. 2006).
60
How to Improve Patent Claim Interpretations213
Thus, a proper patent claim interpretation has to respect the differing roles
of the written description and the claims by interpreting the claim language
with great care in light of the specification, rather than as a shortcut to the
details of the specification. As the Supreme Court explained in 1886, a claim
is not a “nose of wax” to be changed merely by referring to the specification
to make it include something more than or different from what its words
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express.
V. Don’t Use the Wrong Tool for the Job, and Keep It Short
and Simple
Common issues in patent litigation include: (1) whether there is an
infringement, and (2) whether the patent is invalid (a) over prior art, (b)
for failing to have a written description commensurate with the full breadth
67
of the claim, or (c) for failing to enable the full scope of the claim. Claim
interpretation is implicated in all of these issues, as one cannot decide whether
there is infringement or invalidity without deciding first what the scope of
the claim is.
Unfortunately, the “canons” of patent claim interpretation sometimes
68
“fire” at cross purposes. For example, the Federal Circuit holds that a
claim cannot be interpreted more broadly than the subject matter actually
69
invented. This is another way of asking whether the breadth of the claim
66
White v. Dunbar, 119 U.S. 47, 51–52 (1886). The Court stated:
Some persons seem to suppose that a claim in a patent is like a nose of wax, which
may be turned and twisted in any direction, by merely referring to the specification,
so as to make it include something more than, or something different from, what its
words express. The context may, undoubtedly, be resorted to, and often is resorted
to, for the purpose of better understanding the meaning of the claim; but not for the
purpose of changing it, and making it different from what it is. The claim is a statutory
requirement, prescribed for the very purpose of making the patentee define precisely
what his invention is; and it is unjust to the public, as well as an evasion of the law, to
construe it in a manner different from the plain import of its terms.
Id.
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See, e.g., Sandt Tech. Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1356 (Fed.
Cir. 2001) (alleging claims of patent infringement and patent invalidity). Previously, failing to disclose the best mode was a defense. H.R. Rep. No. 112-98, pt. 1, at 52 (2011).
However, under section 15 of the America Invents Act, it is no longer a defense in actions
commenced on or after September 16, 2011. See id; Leahy-Smith America Invents Act, Pub.
L. No. 112-29, § 15, 125 Stat. 284, 328 (2011).
68
Though “canons” are not “cannons,” the author begs the reader’s indulgence for the
sake of the point.
69
Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1355 (Fed. Cir.
2006) (“Although claims need not be limited to the preferred embodiment when the inven-
214 The Federal Circuit Bar Journal Vol. 22, No. 1
is justified by the written description and invites courts to narrow the claim
scope to match the evidence. But another canon says that courts must not
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import subject matter from the written description into the claim. If courts
were routinely to narrow claim scope during claim interpretation to match
the written description, then how would claims ever be invalid for lack of a
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written description, as in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.?
Obviously these canons stand in tension with one other.
The Federal Circuit’s en banc decision in Phillips tells a court to first
understand what was invented and then interpret the claims in that light:
Ultimately, the interpretation to be given a term can only be determined and confirmed
with a full understanding of what the inventors actually invented and intended to
envelop with the claim. The construction that stays true to the claim language and
most naturally aligns with72the patent’s description of the invention will be, in the end,
the correct construction.
This method should not be a license to rewrite patent claims in accordance
with whatever a court thinks the invention is. Instead, the judge needs to
understand the invention, determine what the inventor intended to cover
with the claim language, and reach an interpretation that is true to the claim
language while still aligned with the patent description—assuming that is
possible.
Claim interpretation is not a substitute for filing and prosecuting a reissue
patent application that focuses more specifically on the invention’s details.
Nor is claim interpretation a shortcut to saving a patent claim from defenses
of invalidity. Using claim construction for these purposes is simply using the
wrong tool. To obtain more precise claim coverage, one must either look to
narrower claims that are in the patent already or seek a narrowing reissue.
Claim interpretation could be simplified by focusing on interpreting the
language of the claims and letting the question of whether that claim’s breadth
is justified—i.e. “supported”—to be decided via the traditional defenses
rather than as a question of claim interpretation. The court’s role in claim
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tion is more broadly described, ‘neither do the claims enlarge what is patented beyond what
the inventor has described as the invention.’” (quoting Netword, LLC v. Centraal Corp.,
242 F.3d 1347, 1352 (Fed. Cir. 2001))). Likewise, claim differentiation will not be applied
to construe claims more broadly than the specification indicates. See Regents of Univ. of Cal.
v. Dakocytomation Cal., Inc., 517 F.3d 1364, 1381 (Fed. Cir. 2008).
70
See Am. Piledriving Equp., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1332, 1337 (Fed.
Cir. 2011).
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598 F.3d 1336, 1358 (Fed. Cir. 2010) (en banc).
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Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing earlier
Federal Circuit precedent).
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Cf. Ariad Pharms., Inc., 598 F.3d at 1362.
How to Improve Patent Claim Interpretations215
interpretation is to resolve disputes between the parties as to claim meaning,
not to preempt the ultimate issues.
Conclusion
When handling claim construction, courts should consider using wellqualified masters. In addition to using technical experts to explain technology,
courts should also consider whether legal expert testimony has an appropriate
role in the specifics of the case at bar. Third, all parties should remember and
preserve the different roles of the claims and the written description. Finally,
courts should decide claim construction independently of the subsequent
issues of infringement and validity.